Barrett
Enterprises Group v. A. Rothschild Marketing, Inc.
Claim Number: FA0303000151120
Complainant is Barrett Enterprises Group, Carson City, NV (“Complainant”) represented by Allan B. Gelbard of Law Offices of Allan B. Gelbard. Respondent is A. Rothschild Marketing Inc., Las Vegas, NV (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <bunnyranch.com> registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 21, 2003; the Forum received a hard copy of the Complaint on March 24, 2003.
On March 25, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <bunnyranch.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 16, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@bunnyranch.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On April 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent, <bunnyranch.com>, is identical to Complainant’s BUNNY RANCH mark.
2. Respondent has no rights or legitimate interests in the <bunnyranch.com> domain name.
3. Respondent registered and used the <bunnyranch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates the Bunny Ranch, a world-famous, legal brothel in Carson City, Nevada. The Complaint indicates that Complainant’s first use in commerce of that name was December 4, 1992. Complainant alleges that it is in the process of obtaining a trademark registration with the United States Patent and Trademark Office.
In addition to operation of a house of prostitution, Complainant provides online and other videotape entertainment services under the BUNNY RANCH mark. Complainant’s operations have been widely publicized in the media, including in a recent HBO documentary entitled “Cat House.”
Respondent registered the <bunnyranch.com> domain name December 22, 1998. Respondent is using the disputed domain name to offer escort services in competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required—unregistered or common law trademark or service mark rights” will support a domain name Complaint under the Policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). Complainant established that it has common law rights in the BUNNY RANCH mark through continuous and extensive use in commerce for as many as 10 years. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law”).
The domain name registered by Respondent, <bunnyranch.com>, is identical to Complainant’s BUNNY RANCH mark because the disputed domain name appropriates Complainant’s entire mark and simply adds the generic top-level domain (“gTLD”) “.com” to the end of the mark. The addition of a gTLD does not significantly differentiate the disputed domain name from Complainant’s common law mark pursuant to Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding the domain name <termquote.com> to be identical to Complainant’s TERMQUOTE mark).
The Panel finds that Complainant has established Policy ¶
4(a)(i).
Respondent failed to favor the Panel with a Response with regard to this proceeding. Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).
Moreover, the Panel may presume Respondent lacks any rights to or legitimate interests in the disputed domain because Respondent failed to refute Complainant’s allegations. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).
Respondent is using the <bunnyranch.com> domain
name to provide escort services that compete with Complainant’s business
activities by implying an affiliation, endorsement or connection with the
services provided by Complainant. The use of a domain name that is clearly
identical to a common law mark to compete with the beneficiary of the rights in
that mark is not a bona fide offering of goods or services pursuant to Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use pursuant to Policy
¶ 4(c)(iii). See Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001)
(finding no rights or legitimate interests when Respondent is using a domain
name identical to Complainant’s mark and is offering similar services).
Furthermore, Respondent presented the Panel with no proof and no evidence in the record to suggest that Respondent is commonly known as either BUNNY RANCH or <bunnyranch.com>. Therefore, Respondent failed to establish that it has rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").
Thus, the Panel finds that Complainant has established
Policy ¶ 4(a)(ii).
Complainant alleges that Respondent acted in bad faith by registering a domain name containing in its entirety Complainant’s protected mark in order for Respondent to offer an escort service using the disputed <bunnyranch.com> domain name. Respondent provides services in competition with Complainant’s business activities. Such circumstances permit the inference that Respondent registered and used the disputed domain name that is identical to Complainant’s common law mark primarily for the purpose of disrupting the business of a competitor. This constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).
Moreover, Respondent created a likelihood of confusion between its domain name and Complainant’s common law mark for Respondent’s commercial gain, which also supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bunnyranch.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 12, 2003.
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